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Patent Claim Drafting 101: The Basics

Frequently inventors will ask me if it is a good idea for them to prepare and file their own patent applications. Whenever I am asked such a question I suspect the person doing the asking already knows the answer, but is hoping against hope that they might find someone who will tell them what they really want to hear.

You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix. You won’t die if you screw a patent application, which is virtually inevitable, but you will not likely be pleased with the outcome. If you do achieve rights they will be far more narrow than necessary and you will have created an unnavigable prosecution history that will almost certainly make the claims you do have rather useless.

Having said this, it is not at all uncommon for inventors to want to attempt to draft and file patent applications on their own. The cost of hiring an attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing nothing to pursue their invention and dreams or trying to do something on their own. Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realize that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that there are a good number of things that you can and likely will do that will lead to a resulting right that is compromised or completely worthless.

So those who are unable to pay a patent attorney to draft and file a patent application must be willing to educate themselves to the greatest extent possible in order to have any chance at a modestly successful outcome. Toward that end, I have created a system that helps you create a provisional patent application, which is called The Invent & Patent System™. Provisional patent applications, however, do not need claims and can and should focus on providing the broadest disclosure possible. Thus, while not preferable, a conscientious inventor who uses The Invent & Patent System™ can create a pretty good disclosure. What would be best, however, is to use this as a draft and then get professional assistance.

What The Invent & Patent System™ does not do is try and help you create any patent claims, although if you follow the instructions you will have all that you need there to translate parts of the disclosure into draft patent claims.

Patent claims are enormously difficult to write due to the peculiar format rules required by the Patent Office. Indeed, the United States Supreme Court has on a number of occasions discussed in detail just how difficult it is to draft and ultimately obtain a patent. See Don’t be Fooled, Drafting Patents is Complicated. So most inventors should focus on trying to make sure you have an adequate disclosure and all the ingredients necessary, and do the best they can with these peculiar rules.

First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version.

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. It is necessary to describe the invention so that it is complete, so that it works, but also so that it is different than what is known in the prior art. What makes your invention different? This must be made clear in the claims.

When drafting a claim you want to start with something like this:

1. A {insert title} comprising: {list the parts one by one} {then explain how each are connected}.

For example:

1. A sandwich comprising: 2 pieces of bread, peanut butter and jelly, wherein the peanut butter is spread on 1 piece of bread and the jelly is spread on the other piece of bread and then the two pieces of bread are put together so that the peanut butter and jelly are touching.

This is maybe a silly example, but you should get the idea. Then in another claim what you want to do is describe the invention with every possible option you can think of. Let’s say that my preferred peanut butter and jelly sandwich has bacon, lettuce, tomato and fluff. I would have a second claim that is something like:

2. The sandwich of claim 1 further comprising: bacon, lettuce, tomato and fluff, wherein these ingredients are disposed between the peanut butter and jelly.

Notice how I simply add the extra parts and then say where they go. Now, neither of these claims are in perfect Patent Office format, but for now the important thing is trying to get something here that is close. You want to figure out what your basic invention is and then little by little add more specificity.

Here is another example for a claim to an ordinary shovel:

1. A shovel comprising:
an elongated handle; and
a shovel head;
wherein said shovel head is attached to said elongated handle.

Antecedent Basis

Now lets introduce the concept of “antecedent basis.” Notice that the elements are introduced with either “a” or “an”, as is grammatically appropriate. Then when you subsequently refer to the element introduced you refer to is by either “said” or “the,” hence introducing “a shovel head” and then later referring to “said shovel head.” Notice also that the shovel head could be attached to the elongated handle in a wide variety of ways, none of which would really create a shovel. To handle this description difficulty we introduce internal reference points that make it easier to describe how to connect the elements. So try this claim:

1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head;
wherein said shovel head is attached to said first end of said elongated handle.

Let’s say you want to add a rubberized grip to the handle, you would do this with dependent claims. In fact, in dependent claims you build on a claim earlier to narrow the description to make it more specific. Some dependent claims to a shovel might look like:

2. The invention of claim 1 further comprising a grip disposed around said second end of said elongated handle.
3. The invention of claim 2 wherein the grip is made of rubber.

If your invention were really this shovel you would probably want to further describe the shovel head and explain that it has a neck and a concave portion and the neck is what is really connected to the handle.

Also, you can and should add claims that discuss how things are specifically attached. Examples would be:

4. The invention of claim 3 wherein the shovel head is attached to said elongated handle by insertion of a screw through said neck of the shovel head and into said elongated handle.

Notice here we wanted to refer to the neck in order to explain where and how the screw connects the shovel head with the handle. Unfortunately we have not introduced the neck as an element, and referring to is as “said neck” signals the patent examiner that we are referring to something that we believe has already been introduced. So if we wanted to add this claim we might find it easiest to modify claim 1 as follows:

1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head, which is made up of a neck leading up into a blade;
wherein said shovel head is attached to said first end of said elongated handle.

Conclusion

Perhaps the best way to go about writing claims is to just start writing, then as you need to add elements to the invention to define ever more specific versions check to see if the pieces and parts being added have been introduced properly and result in an description of the version that is complete and describes what you have pictured in your mind’s eye.

There is much to be learned with respect to drafting claims, which is why inventors are at a substantial disadvantage if they are representing themselves. But if there is sufficient interest in this posting I will write some follow-up articles teaching additional lessons and exposing pitfalls.

The Author

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments.

Paul ColeMay 28, 2013 4:33 am

For a patent to be of value, it must be a fit subject for scrutiny by a judge and in the US also by a jury, or at the very least fit for third party due diligence scrutiny. Anyone who has been in litigation and done that knows just how high a standard that is.

If the invention is serious, raise the money and hire an attorney. Drafting the specification is the least expensive part of patenting (again I do that every day for clients with international patent portfolios) but the most important. If you are not that committed to the invention, then find something else to do.

And so far as Europe is concerned, a rough and ready provisional will not do – you need a document to the same standards as a utility patent. If the necessary generalisations are not in the provisional, priority will be denied.

AnonMay 28, 2013 7:41 am

Paul,

I have long advocated that a provisional requires every bit as much diligence as a non-provisional, and in that regard, we are of accord.

JodiMay 29, 2013 1:24 pm

I noticed omitted was talk about what elements of a patent applicatoin an engineer is capable of doing. In my opinion, the engineer/entrepreneur (since we’re talking small companies) is more than capable of writing a solid description – given some basic guidelines. Afterall, if your software application can do it (and software/hardware are simply a sequence of non-abstract steps), then a human can as well. This isn’t a GPS-guided missile

Writing the Claims should clearly be one of the aspects that the attorney/agent handles – but other than filing and interfacing directly with the PTO – what else should be handled by the attorney/agent?

Where is the evidence that an entrepreneur cannot save SOME $costs by writing the core of the application and throwing that over the wall to the patent attorney or agent. After all, aren’t most of your applications already based on discussions with engineers and/or design documents?

Given that most of the recent anti-patent sentiments originate from the software crowd – I would like to suggest that helping those folks to understand what goes into a patent (with a particular focus on software) might help lessen their continuous babble. Teach a man to fish…

Thanks.

MDMay 30, 2013 4:16 am

Thanks Jodi. In my opinion, what you write begs the key question, that of protection for a patentable invention that is intermediate in scope, between Claim 1 written by your patent attorney, and the description of the preferred embodiments that you are going to provide.

In the real world, the patent will issue with an independent claim narrower in scope than the independent claim of the patent application as filed. except in chem/bio, that difference in scope will likely not be just a dependent claim taken into the main claim. Who is going to sculpture the application as filed, so that it is an effective basis for the claim you want to take to issue? That is the highest value drafting skill, in my opinion.

I ask because, time and time again, we find at the EPO that applications from the USA fail to provide adequate support for the “intermediate generalisation” which the Inventor wants to take to issue and to which she iwould have been entitled, if only the patent attorney had done an adequate job of drafting in the first place. Typically, there’s the balloon of Claim 1 and, inside it, the diamond of the Best Mode. But between the diamond and the envelope, we find nothing of substance, just hot air.

Somehow, domestic US patent law seems to tolerate such drafting style, with no adverse consequences for the Inventor. Outside the USA though, that’s another world.

Readers, tell me again that I’m wrong. I love it when you do that.

AnonMay 30, 2013 10:18 am

Jodi,

You state “Where is the evidence that an entrepreneur cannot save SOME $costs by writing the core of the application and throwing that over the wall to the patent attorney or agent”

While I think this can work in some limited instances, by and large this type of ‘throwing over the wall’ actually ends up costing more – sometimes appreciably more.

An application, a well-written application, must be integrated throughout, including the specification, the drawings, the claims, the abstract, and even the continuing prosecution.

With that said, teaching an understanding of patents may be a well intentioned goal. But just look at the recent threads and you will see an unreasonableness by many to even take the time to understand. Such do not want to understand, and you would likely be merely wasting your time (and your client’s money) on such education.

Make the offer of education, and to those willing to understand, teach them to fish.

JodiMay 30, 2013 3:30 pm

MD, you said:

I ask because, time and time again, we find at the EPO that applications from the USA fail to provide adequate support for the “intermediate generalisation” which the Inventor wants to take to issue and to which she iwould have been entitled, if only the patent attorney had done an adequate job of drafting in the first place.

Which essentially supports my point – the fact that “time and time again” the inventor finds out later that “if only the patent attorney had done an adequate job” suggests today’s common method of the attorney writing the entire patent may not be all its hyped up to be.

Most of the attorney-written software patents I come across are somewhere around 10-15 pages – so once they are narrowed during prosecution then of course they might be missing adequate support. The attorney really doesn’t have the time to flesh out all sorts of possible extraneous details. Contrast this with the engineer/entrepreneur with everything on the line who finds it worth his/her time to include all sorts of extra details.

In fact, what added value does an attorney/agent provide in writing the details of the specification over the average engineer-entrepreneur armed with some basic guidelines? Not the Claims – but the Description, Summary, and Figures. The engineer can envision and generate all sorts of possible embodiments, and depth of details – after all – who knows the material better?

JodiMay 30, 2013 3:37 pm

Anon, you said:

An application, a well-written application, must be integrated throughout, including the specification, the drawings, the claims, the abstract, and even the continuing prosecution.

Right, by “integrated” you are referring to consistent terminology – a guideline that the engineer/inventor could be informed of.

MDMay 30, 2013 5:43 pm

Good stuff Jodi, but you demonstrate my point. At least in Europe, the acme of the patent attorney’s skill and talent is to abstract out of all the endless detail the generalisation, the concept which is “the Invention”. Where I come from, the threat is not from the slavish copier of the detail but from the well-funded competitor that eschews all the detail, disdains it, but nevertheless robs you of the one thing that’s really valuable, the concept.

Can you abstract “the concept” like a top patent attorney can. iI has taken me 40 years of trying, and I’m still not there, seeing perfectly the concept, out of all the background detail.

Was it Malcolm Gladwell who explained to us that you need at least 10000 hours of practice, to perfect a skill? You know, i think he was right. What do you think?

JodiMay 30, 2013 6:33 pm

MD,

A decent engineer has the ability to see the 3 or 4 steps that combined together form the core or “the concept” as you term it. Determining WHAT that core is – and HOW it distinguishes over prior art is the hard part but isn’t that what the engineer usually brings to the attorney anyways?

AnonMay 30, 2013 8:33 pm

Jodi,

No – common terminology is but a mere result of the integration I speak of.

An application is a legal document. You will fail more than you succeed going down your path.
Sorry – I’ve been there.

MDMay 31, 2013 2:05 am

Jodi, yes. It is your Invention. As the patent attorney, I just get the privilege of writing it up. A Ghost Writer will provide the text of the autobiography of a sports star, but the life being described is that of the sports star not the Ghost Writer. Before the writer sets to work, there are hours and hours of discussions about what to write and how to manage the key issues. It has to convince readers, that the writer is the Sports Star

Will the autobiography be a success? That might depend on the quality of the writing. One thing’s for sure, whenever a patent application is written, ist legal effectiveness is going to be decided by whether it has been written by a competent patent attorney or not.

Or think of a film about the Sports Star. Should the Star Play the role? Will that make the film a success. Acting is a skill that takes years to learn. So too the writing of patent applications. On that, anon is right.

Frankly, I think Gene Quinn missed an opportunity to get across to readers how important it is to identify the inventive concept. Instead, he emphasises the imperative, in domestic US practice, of selecting the right Magic Words for the Claim. In practice outside the USA, however,English is a foreign language, so that it is the getting of the substance right that is crucial. Outside the USA, there are no magic words.

ElliottJanuary 8, 2014 11:29 am

Thanks for all of the helpful information and comments. I am an aspiring DIY inventor. Everything that I’ve read up to this point has concentrated heavily on Pro Se pitfalls. Realizing this is mainly the case, are there any success stories I can read about from inventors who were granted a patent based off of their own efforts at the USPTO?

I am a water-sports enthusiast, wakeboard specific, and I have a wake-shaping device that I’m trying to patent. I have 2 weeks until my utility application needs to be filed and up to now I’ve been unsuccessful in raising enough money to hire an IP Attorney. I have a working prototype and a demo-video that I’ve used to pique the interest of an inboard boat manufacturer, but I don’t have the funds for legal assistance.

It’s an unfortunate situation I know but I’ve been trying regardless. Are there any options that I am not aware of? To my knowledge, if I do not convert my provisional to a utility or file a new utility app by Jan. 23, 2014 then I could lose all of my patent rights. Well, my provisional application is as detailed as I could make it (17pgs including drawings), so I figure worst case is I will attempt to draft my own claims. Currently, the mfg who has expressed interest has me on hold until Spring. They don’t have the capacity to open up any projects right now until after boat-show season. Trying to keep the ball rolling so I don’t completely
lose out… Any advice will help. Thank you & kind regards! – Elliott Dollar

KostasFebruary 21, 2014 6:18 am

I am an attorney from Greece, deling with business law. In the context of my practice I had to make an application for patent. I would not say I am specialized in that sector, cause in Greece there are not attorneys dealing exclusively with patents, however I managed to grant my cliend a patent with a good examination report. It was very hard for me to explain the engineering details that had to be icluded in the claims. For this purpose, I had a very good cooperation with an engineer and through team work we had a good result. I think that the combination of the two specialties is necessary. I assume from what i read that remunaration of IP attorneys is much higher in relation to Greece, but if you believe in your invention it is worth it to hire both attorneys and engineers to increase the possibility of a better result.
Thnx, Kostas Kalantzis

ElliottFebruary 21, 2014 11:39 am

Kostas,

Thank you for the valuable feedback! Very inspiring to know you figured it out and received a granted patent for your client. I bet they were thrilled!

I did go ahead draft & file my own non-provisional application. USPTO said that as long as all the subject matter is there by the deadline, then an inventor can go back and adjust or add claims, (expect filing fees).

Thank you again for your attention to this matter. Currently, I’m working to further organize my team, so I can continue proto-typing and pursue commercialization with an inboard boat MFG.

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